What are risks and op­por­tu­ni­ties of new gTLDs?

The gradual in­tro­duc­tion of new generic TLDs was meant to lighten the burden on the domain market somewhat. Prac­ti­cal­ly any term was allowed as long as it complied with ICANN’s guide­lines. This freedom led to con­tro­ver­sial sug­ges­tions like .guru, .sucks, and .wtf as well as other numerous lengthy proposals.

Risks and op­por­tu­ni­ties when reg­is­ter­ing a new gTLD

ICANN’s decision to loosen address al­lo­ca­tion and create new top-level domains proved to be popular from the start. Just a few months after people caught wind of the decision, busi­ness­es, cities, and com­mu­ni­ties as well as non-profit or­ga­ni­za­tions rushed to register their desired domains. The sug­ges­tions included trademark domains like .apple or .bmw, regional ref­er­ences like .nyc and .boston, as well as general terms like .love, .blog, and .shop.

But in the midst of rejoicing about this new-found freedom, there was worry about whether competing companies or critics would already own the ending you wanted for your brand name, product line, or business segment. The or­ga­ni­za­tion, which is ad­ver­tised by ICANN as a domain name registry, is ul­ti­mate­ly in charge of deciding the avail­abil­i­ty of a domain ending and the usage guide­lines. The result was a lengthy dis­cus­sion whereby different stake­hold­ers claimed certain top-level domains for them­selves and con­se­quent­ly tried to stop others from using them. For this reason, the new endings include numerous exclusive top-level domains, which are not available to private users at all or only to a limited extent.

Brand nTLDs

These include nTLDs that are intended to be used ex­clu­sive­ly by brand owners. Around a third of the ap­pli­ca­tions processed by ICANN account for busi­ness­es and or­ga­ni­za­tions that want to register their own name domain as ad­min­is­tra­tors. This includes companies like Apple, Google, and BMW. They don’t nec­es­sar­i­ly register the domain because of its ad­van­tages, they are sometimes concerned about cy­ber­squat­ting, which is a practice that involves someone else occupying a domain ending.

For private persons, there is hardly any risk of ac­ci­den­tal­ly reg­is­ter­ing a trade­marked new TLD since trademark nTLDs are not offered by tra­di­tion­al providers.

Domain endings with CPE status

The “community priority eval­u­a­tion” (CPE) was in­tro­duced by ICANN to allow stake­hold­ers to protect popular endings from large cor­po­ra­tions. If a community ap­pli­ca­tion is submitted to ICANN, it is given priority over con­ven­tion­al ap­pli­ca­tions. This can only happen when the applicant can prove that the majority of the affected community supports the ap­pli­ca­tion for the domain. Site owners generally make domains with CPE status available when they are part of the community or a specific industry. This is how .hotel endings focus solely on hotels, hotel chains, hotel as­so­ci­a­tions, and hotel marketing or­ga­ni­za­tions. In order to prevent your own domain from being blocked, or to avoid legal disputes, users should check relevant community domains in advance to see if they fulfill the necessary re­quire­ments.

Regional nTLDs

Domains con­tain­ing regional ref­er­ences have become very suc­cess­ful over the last few years. New domain endings like .nyc and .boston offer the benefit of pre­sent­ing an offer in a regional context, allowing site owners to directly address the desired read­er­ship. In order to register an nTLD, website owners usually have to prove that they have a residence or a reg­is­tered business in the ap­pro­pri­ate region. This helps safeguard against the nTLD being misused. A popular tip to still be able to use these new TLDs is to register a domain through a local trustee that’s acting as a reg­is­trant for the actual holder.

Con­tro­ver­sy when al­lo­cat­ing new top-level domains

Customers pay a monthly fee for reg­is­ter­ing a domain. Supplying address suffixes is a prof­itable business for ad­min­is­tra­tors of popular nTLDs. The basic problem with new TLDs with high reg­is­tra­tion volumes is that they put wealthy busi­ness­es in par­tic­u­lar at an advantage as they are equipped to pay the millions of dollars in licensing fees. There are many nonprofit or­ga­ni­za­tions that would like to reserve some of these new domains for them­selves. The lengths in­di­vid­ual busi­ness­es go to to occupy general nTLDs as brand domains is an ad­di­tion­al factor that can po­ten­tial­ly lead to conflicts.

ICANN’s guide­lines generally exclude the exclusive use of general language terms. However, the ad­min­is­tra­tive body’s decisions have re­peat­ed­ly caused annoyance in the past.

Amazon not so lucky with its own brand nTLD

The online mail order business, Amazon, didn’t have much luck when it came to reg­is­ter­ing its own domain in 2012. When applying for the extension .amazon in 2012, the company had to appeal an objection from the Amazon Co­op­er­a­tion Treaty Or­ga­ni­za­tion (ACTO), a group promoting the de­vel­op­ment of the Amazon basin. Led by Brazil and Peru, the group wanted to use the domain for websites about en­vi­ron­men­tal pro­tec­tion measures and the rights of in­dige­nous people. The alliance also insisted ICANN make a new rule so that ge­o­graph­i­cal cat­e­gories have special pro­tec­tion.

in 2019, a full seven years later, ICANN sided with the con­glom­er­ate and granted Amazon the rights to use .amazon as a trademark TLD - much to the dis­ap­point­ment of ACTO members, who, in­ci­den­tal­ly, had been offered Kindle readers and other products worth five million dollars by Amazon during the course of the dispute.

Pre-pro­grammed problems with nTLDs

Among the freely available nTLDs, there are some options that could prove to be fertile ground for legal disputes. These are domain endings that have the potential to defame busi­ness­es, brands, or in­di­vid­u­als. The ones high­light­ed in media reports include .sucks, .porn, and .wtf. To prevent in­junc­tions from being issued, website owners should exercise caution when using such domain endings.

.sucks – an annoying domain

“This sucks” is generally used to express dis­con­tent about a person or a cir­cum­stance. Many brand owners believe that this new TLD will be used pre­dom­i­nant­ly for defama­tion and have tried to pip others to the post through defensive reg­is­tra­tions. Similar behavior has also been seen among celebri­ties. In 2015, for example, singer Taylor Swift took the pre­cau­tion of reserving both the .sucks domain for her name as well as the cor­re­spond­ing .porn coun­ter­part.

Vox Populi, the domain registry re­spon­si­ble for the .sucks domains, does not see any problems with the new TLD. The registry sees the ending rather as an op­por­tu­ni­ty for companies to enter into a dialog with customers.

Why defensive reg­is­tra­tion is un­nec­es­sary

Domain endings like .sucks, .wtf, and .porn are only prob­lem­at­ic when used in com­bi­na­tion with brands or proper names. Although a site like www.monday.sucks is totally harmless, a site like www.brand-name.sucks could damage the brand’s trademark rights if the site is not operated by the brand itself.

A company doesn’t nec­es­sar­i­ly have to register the address them­selves in order to protect the brand’s rights. ICANN has two efficient methods available for this, which are the Trademark Clear­ing­house (TMCH) and Uniform Rapid Sus­pen­sion (URS), which protect against unlawful domain reg­is­tra­tions. The Trademark Clear­ing­house serves as a central register where brands can be recorded. If a new top-level or second-level domain is proposed that matches an existing data set in the register, the ap­pro­pri­ate brand owner will be notified. Brand owners can have internet addresses suspended via the uniform rapid sus­pen­sion if someone tries to register a similar domain or misuses the reg­is­tra­tion process.